Patent Law

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Patent Law

• Presented by
• Walker Mann, LLP
• 9421 Haven Ave., Suite 200
• Rancho Cucamonga, Ca. 91730
• www.walkermann.com
• 909.581.8300 Office
• 909.945.5970 Fax

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Patents

• A patent is a Constitutional right.
• It is granted by the U.S. Patent and Trademark
  Office.
• It is designed to encourage inventions that are
  useful to society.

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What is a Patent

• A granted property right that allows the owner
  to exclude others from making, using, offering
  for sale, or selling the invention in the United
  States or importing the invention into the United
  States
• Term is 20 years from filing application

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Types of Patents

• Utility
• Design
• Plant

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Utility Patents

• Processing Methods
• Machines
• Manufacture
• Compositions of Matter
• Improvements to One of These

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Design Patents

• Limited to the ornamental design of an invention
• Unrelated to the function of the invention
• Term is 14 years from date of issue

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Patent Law Basics

• An invention must be useful
• An invention must be novel
• An invention must be non-obvious
• An invention must be fully disclosed

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Useful

• Whoever invents or discovers any new and useful
  
• Must have some usefulness (utility)
• The invention must work
• Very few patents are rejected as being non-useful

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Novel

• The invention must be new
• Must be different from anything previously known
• Cannot get a patent
• Known or used by others in US before date of
  invention
• Patented or published anywhere in world before
  date of invention

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Novel

• In public use or on sale in US more than 1 year
  before patent filing date
• Patented or published by inventor or others
  anywhere more than one year before patent filing
  date
• Invented by someone else

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Non-obvious

• The invention must not be obvious to a person
  skilled in the art
• Must not be easily created or suggested by
  combining two or more previously known inventions

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Fully Disclosed

• Patent protection is granted in exchange for
  disclosure of everything known about the
  invention
• Patent application must have a full, enabling
  disclosure
• Must disclose best mode of the invention

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Three Steps to a patent

• Determine Patentability
• Conduct a Patent Search
• File for a Patent Application

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Patentability

• A. Is the utility invention
• A process or method?
• A machine?
• An article of manufacture?
• A composition of matter? Or
• An improvement of one in the first four
  categories?
• B. Is the utility invention
• Useful?
• Novel?
• Non-obvious?

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Patent Search

• Patent search Online www.uspto.gov
  www.google.com/patents
• Patent search Offline Patent and Trademark
  Depository Libraries
• Other sources for publications and scientific
  articles

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Filing a patent

• Preparing and Filing a Patent Application can be
  an Arduous Task
• You must consider all the Uses and Variations on
  your Invention
• Professional Assistance Provides the Fullest
  Protection

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Anatomy of a Patent

• Specification thorough description of invention
  and uses
• Claims the legal language which defines the
  boundaries of the invention
• Drawing

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Inventor vs. Owner

• An inventor is any person who has contributed to
  any claim of patent
• Inventorship never changes
• Ownership can change
• Patents are property
• Patents can be sold or assigned to others

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Benefits of Licensing

• Patent owner (licensor) promotes commercial
  development and generates income
• Licensee is free from suit
• Both parties avoid infringement litigation

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Licensing Terms

• License Grant
• Authorized activities make, use, sell
• Nature of grant exclusive vs. non-exclusive
• Geographic scope
• Terms and Conditions
• Limitations
• Excluded fields of use
• Others

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Licensing Terms

• Licensing Fees
• Term and Termination
• Expiration of patent
• Termination for convenience
• Termination for cause

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Patent Lawsuits

• Federal Court Jurisdiction
• Process
• Pleadings Complaint Answer
• Discovery Written Depositions
• Markman hearing
• Summary Judgment
• Trial
• Appeals

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Patent Infringement

• Literal
• Requires infringement of all elements of the
  claim
• Doctrine of Equivalents
• Insubstantial differences in the function, method
  or result

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Challenge to Patent Validity

• Prior Art Anticipation or Obviousness
• Indefiniteness
• Enablement
• Best Mode
• Inoperable
• Inequitable Conduct

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Defenses to Infringement

• Non-Infringement
• Literal
• Doctrine of Equivalents
• Estoppel
• Latches

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Lawsuit Remedies

• Injunctive Relief
• Temporary Restraining Order
• Preliminary Injunction
• Permanent Injunction
• Damages
• Lost Profits
• Reasonable Royalties
• Costs and Attorney Fees
• Punitive Damages

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Cease and Desist
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Cloth Purse
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Thank you

• We, at Walker Mann, would like to thank you for
  your time today.
• Please keep us in mind in the event that we may
  be of service.

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Obtain your FREE Consultation when mentioning
this Presentation and Contacting

• Walker Mann, LLP
• 9421 Haven Ave, 2nd Floor
• Rancho Cucamonga, CA 91730
• 909.581.8300 Office
• 909.945.5970 Fax

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